Internet Keyword Advertising: Not a Violation of Right to Publicity

Wisconsin privacy and intellectual property laws protect against the use of an individual’s name for purposes of advertising or trade. However, the court of appeals found that such protections did not prevent a law firm from using two competing attorneys’ names to generate advertising on Internet search engines.

Imagine that a competing law firm pays Google so that whenever someone searches for your name on Google’s search engine, Google lists the competitor at the top of the search results. Is that lawful?

Wisconsin law recognizes both a privacy right protecting against misappropriation of a person’s name for trade or advertising purposes and an intellectual property right in the commercial value of a person’s name. This article summarizes Habush v. Cannon,1 in which the Wisconsin Court of Appeals held that a competitor’s use of a name as a keyword to trigger advertising on a search engine does not violate these rights.

The Rights of Privacy and Publicity

In his influential 1960 law review article, William Prosser envisioned the right of privacy as four distinct torts.2 The appropriation privacy tort protects a person from damage to commercial or dignity interests resulting from the unauthorized use of that person’s identity.3

In the seminal case of Haelan Laboratories Inc. v. Topps Chewing Gum Inc., the Second Circuit Court of Appeals recognized that well-known persons need more than the right to protect their personal privacy interests.4 They need an independent intellectual property right to help them realize the commercial value of their identity. This so-called right of publicity is an assignable property right protecting the commercial value of an individual’s identity.5 Infringement is a type of unfair competition.6

Wisconsin Statutory Law. Wisconsin originally refused to recognize common-law privacy rights. For example, in the notorious Yoeckel case, the Wisconsin Supreme Court refused to recognize a cause of action in a situation involving a woman who alleged that a tavern keeper photographed her in the restroom and displayed the photograph to other patrons.7

“(1) The right of privacy is recognized in this state. One whose privacy is unreasonably invaded is entitled to the following relief:

“(a) Equitable relief. …

“(b) Compensatory damages. … and

“(c) Attorney fees.

“(2) In this section, ‘invasion of privacy’ means any of the following:

…

“(b) The use, for advertising purposes or for purposes of trade, of the name, portrait or picture of any living person, without having first obtained the written consent of the person or, if the person is a minor, of his or her parent or guardian.

…

“(3) The right of privacy recognized in this section shall be interpreted in accordance with the developing common law of privacy, including defenses of absolute and qualified privilege, with due regard for maintaining freedom of communication, privately and through the public media.”

The Right to Control Publicity: Causes of Action, Defenses, and Remedies

By Elisabeth Townsend Bridge

The right to control publicity prevents one person from using another person’s identity for commercial gain without obtaining consent from the person whose identity is being used. It is intended to protect a person’s property interest in the publicity value of his or her identity. The Wisconsin Supreme Court has identified two public policies justifying recognition of this right: 1) controlling the effect on a person’s reputation of commercial uses of one’s identity and 2) preventing the unjust enrichment of those who appropriate the publicity value of another’s identity.1

Wisconsin recognizes statutory and common law rights to control publicity. Each of these rights has a distinct cause of action, with similar, but not identical, defenses and remedies.

Causes of Action

The statutory cause of action for violation of the right to control publicity is found in Wis. Stat. section 995.50(20(b). It requires “the use, for advertising purposes or for purposes of trade, of the name, portrait or picture of any living person, without having first obtained the written consent of the person or, if the person is a minor, of his or her parent or guardian.”

A prima facie case for the common law cause of action has two elements: 1) the plaintiff must be readily identifiable and 2) the plaintiff must have suffered damages based on either the plaintiff’s loss or the defendant’s unjust enrichment.2 These elements are both factual questions that must be decided by the jury. In regard to the first element, a nickname, as opposed to a legal name, can sufficiently identify a plaintiff, and the name or identifier need not be unique to the plaintiff.

Attorneys should carefully consider both causes of action, especially in cases in which a factual element of the statutory cause of action cannot be met. For example, the common law cause of action can be brought on behalf of a deceased person, while the statutory cause of action cannot.

Defenses

The privacy statute does not provide affirmative defenses, but does incorporate by reference applicable defenses from the common law right of privacy, including absolute and qualified privilege.

The statute also requires “due regard for maintaining freedom of communication, privately and through the public media,”3 which suggests an exception for noncommercial media uses. Therefore, it appears unlikely that individuals could use the statute or the common law cause of action to shield themselves from public criticism or restrict their names, portraits, or pictures from being used in unauthorized news stories.

Remedies

Section 995.50(1) provides for compensatory damages, equitable relief, and reasonable attorney fees to a prevailing plaintiff. Compensatory damages are not limited to pecuniary loss, but the plaintiff must specifically prove damages based on either the plaintiff’s loss or the defendant’s unjust enrichment.

Section 995.50(1) provides for attorney fees to prevailing plaintiffs, and a defendant’s offer of judgment is invalid if it does not include an allowance for reasonable attorney fees.4 However, a court may also award a prevailing defendant attorney fees if the court determines that the claim was frivolous. A claim is frivolous if the action “was commenced in bad faith or for harassment purposes,” or if it “was devoid of arguable basis in law or equity.”5

Section 995.50 does not provide for punitive damages and it is unlikely that punitive damages would be awarded in a common law privacy action.

There are two key factors for understanding the scope of the invasion of privacy defined in subsection (2)(b). First, the Seventh Circuit Court of Appeals (and now the Wisconsin Court of Appeals, in Habush v. Cannon) has determined that New York law is particularly useful in interpreting the language of subsection (2)(b).8 This is because subsection (2)(b) copied the language of the New York privacy statute9 almost verbatim and because the legislative history indicates that subsection (2)(b) was meant to incorporate New York’s privacy law.10 The interpretations and limitations applied to the language of New York’s statute may be persuasive in Wisconsin.

Second, according to the Seventh Circuit, subsection (3) means that Wisconsin may recognize exceptions to subsection (2)(b) originating from other jurisdictions.11 For example, incidental12 and newsworthy13 uses of a name might not be actionable.

Wisconsin Common Law. After the enactment of section 995.50, but before it went into effect, the Wisconsin Supreme Court recognized a similar common-law claim for “appropriation of a person’s name for trade purposes” in Hirsch v. S.C. Johnson & Son Inc.14 Such “cause of action is dependent upon the cases that recognize the ‘right of publicity’ and the limitations that the possessor of that property right may place upon the commercial and public use of the name.”15 The Hirsch court approvingly cited Haelan Laboratories, noting that unlike the common-law privacy rights the court previously refused to recognize, the right of publicity (together with the appropriation tort) was a distinct “right to control the commercial exploitation of aspects of a person’s identity.”16

Habush v. Cannon – Keyword Advertising and the Rights of Publicity and Privacy

A search engine like Google reviews and indexes websites. When a user types a word or phrase into the Google search engine, Google’s proprietary software determines which websites are relevant to that phrase and provides a list of websites in order of relevance. Being at the top of the list indicates a higher degree of relevance and is most likely to be seen by the user.

Google earns money by auctioning off certain “keywords” to advertisers. When a user conducts a search for one of these keywords, Google will place an advertiser’s sponsored-search result at the top of the search results for that keyword. The sponsored result contains a short statement and link to the advertiser’s website. Google earns a fee each time a user clicks on the link.

In 2009, Cannon & Dunphy S.C. (the Cannon firm) purchased keyword advertising with Google, Yahoo!, and Bing so its website would be the first appearing sponsored-search result for users searching for the name “Habush” or the name “Rottier.” Habush and Rottier are shareholders of Habush Habush & Rottier S.C. (the Habush firm).17 The Cannon firm’s sponsored-search result did not display Habush’s or Rottier’s names in its ad copy. Nevertheless, Habush, Rottier, and the Habush firm sued the Cannon firm, claiming that the keyword advertising invaded their privacy rights under Section 995.50(2)(b).18

The attorney’s name or the law firm’s name? What rights does a law firm have under Wis. Stat. section 995.50(2)(b)? The Cannon firm argued that the Habush firm had no claim under subsection (2)(b) because such claims are expressly limited to “living persons.”19 Habush and Rottier contended that the Habush firm had a claim because the right of publicity allowed Habush and Rottier to license their names to the Habush firm.

The Habush firm asserted only a claim under subsection (2)(b). The failure to bring the common-law claim proved fatal because the circuit court found that subsection (2)(b) is limited to living persons. Further, the circuit court held, section 995.50 does not provide for the type of assignment Habush and Rottier proposed.20 The circuit court therefore dismissed the Habush firm’s claims. This decision went unchallenged on appeal.

What about individual attorneys? Might they be entitled to relief? The Cannon firm contended that the court must dismiss Habush’s and Rottier’s claims because the monetary harms were primarily incurred by the Habush firm.21 Habush and Rottier countered that they were free to protect their own names from the Cannon firm’s use because appropriation privacy rights are distinct from any monetary harms suffered by the Habush firm. For example, an entity such as the Habush firm could not have suffered mental injury. Furthermore, Habush and Rottier argued that the assignment to the Habush firm was nonexclusive.

The court found that Habush and Rottier could assert a claim. Monetary injury to the claimant was not an element under subsection (2)(b) and, in any event, Habush and Rottier did not seek monetary relief. The names at issue were Habush’s and Rottier’s names even if their names were also in use by the Habush firm. Thus, Habush and Rottier could properly seek injunctive relief.

Circuit Court: Keyword Advertising Between Competitors is Reasonable

Does using your name as a keyword to trigger advertising on a search engine constitute a use for trade or advertising purposes under Wis. Stat. section 995.50(2)(b)? On motion for summary judgment, the Cannon firm contended that, under New York law, a “use” requires a name to be in or on an advertisement or otherwise be visible to the public. Further, the Cannon firm contended that the language “advertising purposes or … purposes of trade” requires that the name be displayed as part of a promotion or endorsement.

Habush and Rottier countered that nothing in the language of subsection (2)(b) requires a “use” of a name to be perceptible. They argued that giving the terms their plain meaning, a use under (2)(b) was broad enough to encompass any employment or application of a name so long as it was for purposes of trade or advertising. In support, they cited the prevailing body of trademark case law, under which using a trademark as a keyword to trigger advertising constitutes a “use in commerce” for purposes of 15 U.S.C. § 1125(a).22 Just as in trademark law, Habush and Rottier argued, the Cannon firm “used” their names both as a trigger to generate advertising and as a placement of advertising in the search results for their names.

Finally, Habush and Rottier argued, it was immaterial under New York case law whether their names were visible in the sponsored-search result itself. Under such law, advertising purposes and trade purposes include those uses that are made as part of an advertisement or that would draw trade to the user.

The circuit court agreed with Habush and Rottier’s interpretation for three reasons. First, it found that subsection (2)(b) was not ambiguous and did not impose the visibility conditions sought by the Cannon firm. Second, the court pointed out that Habush’s and Rottier’s names actually were visible to the searcher because they appeared in close proximity to the Cannon firm’s sponsored-search result. Finally, the court found it self-evident that keyword advertising exploited the commercial value of Habush’s and Rottier’s names for purposes of trade. The entire purpose of the use of the names was to generate an advertisement meant to steer trade toward the Cannon firm’s website.23

Nevertheless, the circuit court ruled in favor of the Cannon firm. The court found that subsection (1) set out an additional “reasonableness” element. It based this conclusion on the language of subsection (1), which gives a claim for “[o]ne whose privacy is unreasonably invaded…” (emphasis added). The court based its finding that the Cannon firm’s use was reasonable on several factors.

First, the court looked to section 1 of the Restatement (Third) of Unfair Competition for guidance and determined that the freedom to compete for prospective customers is a fundamental economic policy in Wisconsin.24 Second, it favorably compared keyword advertising to lawful practices such as locating offices near to those of a competitor, buying advertisements to move up directory listings, or erecting billboards next to a competitor’s billboard.

Third, the court found that the Cannon firm’s use of Habush’s and Rottier’s names in such manner was reasonable given that Habush and Rottier had made their names inseparable from the Habush firm. Finally, the court rejected Habush and Rottier’s suggestion that keyword advertising between attorneys was “unreasonable” because it violated the rules of professional conduct. The court held there was no direct authority in Wisconsin reaching that conclusion.25

Court of Appeals: Keyword Advertising Is Not an Invasion of Privacy

The court of appeals affirmed the circuit court’s decision using reasoning similar to that of the circuit court but on a different legal basis. The court of appeals found that it was not necessary to determine whether Wis. Stat. section 995.50(1) adds an additional “reasonableness” element. Instead, the controlling issue for the court of appeals was whether using a name as a keyword to generate advertising qualified as an invasion of privacy under the language of subsection (2)(b) in the first instance.26

Unlike the circuit court, the court of appeals found that the word “use” in subsection (2)(b) is ambiguous because both parties’ interpretations were reasonable.27 Habush and Rottier’s reading comported with the language of the statute, while the Cannon firm’s reading was consistent with the large body of privacy case law that interpreted that language.

The court of appeals found the Cannon firm’s interpretation was the better one for two reasons. First, reviewing privacy case law from Wisconsin, New York, and other jurisdictions, the court could not find a single case recognizing that an invisible use could be a misappropriation.

The court rejected Habush and Rottier’s reliance on trademark law. The court would not look to such cases for guidance given the absence of legal argument for why trademark law would be binding or instructive in the context of privacy law. This reluctance to rely on trademark law is consistent with subsection (3), which directs courts to review the developing common law of privacy and does not instruct courts to review trademark law.

Instead, the court found New York case law to be instructive. The court applied a basic rule of statutory construction, which holds that by adopting the language of New York’s statute, the Wisconsin Legislature also adopted the interpretation given to the language by New York courts.28 No New York state case suggested that imperceptible uses would violate subsection (2)(b).

The second reason the court of appeals gave for favoring the Cannon firm’s interpretation was the court’s approval of the analogy to proximity advertising. As discussed, Habush and Rottier argued that keyword advertising was an unlawful use in two ways: 1) as a trigger to buy the advertisement, and 2) as a placement in close proximity to the search engine’s search results. The court of appeals reasoned that erecting a billboard close to a competitor’s billboard or office implicates only geographical proximity, not a name. Placing the Cannon firm’s advertising at the top of the search results was simply a digital extension of the same concept.

Habush and Rottier contended that the analogy was inapt because the keyword trigger created proximity where none previously existed. The court, however, did not view this trigger any differently than simply calling a billboard company and asking it to place an advertisement near a competitor’s. The keyword trigger was merely a digital mechanism to accomplish the same result.

Conclusion

In Habush v. Cannon, the circuit court held that using a name as a keyword to trigger advertising on a search engine invades a person’s privacy under Wis. Stat. section 995.50(2)(b), but such advertising between competitors may be reasonable and thus not actionable under subsection (1).29 The court of appeals, on the other hand, held that keyword advertising without a visible use of a name does not constitute an invasion of privacy under subsection (2)(b).

Notably, neither Habush opinion defined exactly what constitutes a use for purposes of advertising or trade, provided a standard to determine when a person has “reasonably” invaded the privacy of another, or stated what affirmative defenses are available or how the common-law claim differs from the statutory claim. Further, one questions how the outcome would have differed if the advertiser was not a competitor (for example, if Pizza Hut purchased keyword advertising on Michael Jordan’s name).

New York has wrestled with similar questions for more than a century. Thus, the main lesson from Habush may be that Wisconsin attorneys can now refer to the much larger body of New York case law to help interpret subsection (2)(b).

Finally, Habush covers only privacy rights under Wis. Stat. section 995.50 and does not consider keyword advertising in other contexts, such as trademarked terms. Competing firms should take note that both the Habush firm and the Cannon firm have now registered trademarks for their names and marketing slogans.30

10 Judith Endejan, Comment, The Tort of Misappropriation of Name or Likeness Under Wisconsin’s New Privacy Law, 1978 Wis. L. Rev. 1029, 1034 & n. 30 (1978) (noting that the Legislative Reference Bureau’s draft file expressly references the incorporation of the New York statute as a category of invasion of privacy and attaches a copy of New York Civil Rights Law section 50).

11Bogie, 705 F.3d at 615-16 & n.3.

12See Netzer v. Continuity Graphic Assocs. Inc., 963 F. Supp. 1308, 1326 (S.D.N.Y. 1997) (holding that direct and substantial connection is required between appearance of plaintiff’s name or likeness and main purpose and subject of the work); accord Bogie, 705 F.3d 603 (holding that use of plaintiff’s 16-second-long conversation in a documentary film was too insubstantial and remote from larger purpose of film to be actionable under Wis. Stat. section 995.50(2)(b)).

24See Restatement (Third) of Unfair Competition, §1, cmt. (a); Wis. Stat. § 133.01. Review of such legal authority may have been influenced by the court’s view of the claim as arising under the right to publicity. Infringement of such right is a type of unfair competition.

25 There may now be such authority in North Carolina. See 2010 Formal Ethics Op. 14 (N.C. State Bar, April 27, 2012) (stating that keyword advertising on a competing attorney’s name is misleading and dishonest conduct in a violation of rule 8.4(c)).

29 For example, the right to publicity may be subject to the first-sale doctrine such that a person cannot enjoin the resale of his or her licensed merchandise in the secondary market. See generally Allison v. Vintage Sports Plaques, 136 F.3d 1443, 1449 (11th Cir. 1998).